DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on Mar. 7, 2024 have been considered by the examiner.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 21-41 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
1) Claim 21 recites the limitation "the cell". There is insufficient antecedent basis for this limitation in the claim. It is unclear if “the cell” refers to the battery recited in the preamble. If this is the case, the terms used should be consistent. If this is not the case, the cell must be defined. For purposes of examination, “the cell” as claimed is interpreted as referring to the battery recited in the preamble. The issue also applies similarly to independent claims 31 and 41.
2) The term “significantly” in claim 21 is a relative term which renders the claim indefinite. The term “significantly” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The related limitations have been rendered indefinite due to the use of the term “significantly”. The issue also applies similarly to independent claims 31 and 41.
3) Claims 21, 31 and 41 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential structural cooperative relationships of elements, such omission amounting to a gap between the necessary structural connections. See MPEP § 2172.01. The omitted structural cooperative relationships are: i) graphite and “the cell”; ii) graphite and silicon; iii) graphite and the anode; or/and iv) graphite and the battery.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained through the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claim Rejections - 35 USC § 103
Claims 21-26, 28-32, 34-36 and 40-41 are rejected under 35 U.S.C. 103 as being unpatentable over Akagi et al. (JPH 11339796 A, whose English machine translation is being used in this Office action for citation purposes, hereafter Akagi).
Regarding claim 21, Akagi teaches a battery (at least [0015]), the battery comprising:
a cathode (“positive electrode”, [0015]), an electrolyte (“an electrolytic solution”, [0015]), and an anode (“negative electrode”, [0015]), the anode having an active material comprising 30%-90% of silicon by weight ([0014]). The above range of 30%-90% overlaps the range of “more than 50%” as claimed. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
The limitations “the battery is chargeable to full charge by lithiating less than 100% of the silicon of the anode” and “a voltage of the anode at full charge of the cell does not drop below a level where graphite is significantly lithiated” represent the characteristics, properties or functions of the battery as claimed. Since Akagi teaches the same battery as claimed, as addressed above, the claimed characteristics, properties or functions are necessarily present.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP § 2112.01 I. Regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997). See MPEP § 2112.01 I.
Regarding claim 22, Akagi teaches the battery according to claim 21, wherein the percentage of silicon in the active material comprising is 30%-90%, overlapping the instantly claimed 70%. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
Regarding claim 23, Akagi teaches the battery according to claim 21, and the instantly claimed “a voltage of the anode during discharge of the battery remains above a minimum voltage at which silicon can be lithiated” represents a property or characteristic of the anode. Since Akagi teaches substantially the same anode as claimed, the claimed property or characteristic is necessarily present. Regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.).
In addition, the terms “discharge of the battery” and “silicon can be lithiated” represent processes of operating the battery or lithiating silicon. It is noted that an apparatus must be distinguished from the prior art in terms of structure rather than function noting that apparatus claims cover what a device is, not what a device does (see MPEP 2114.).
Regarding claims 24-26, Akagi teaches the battery according to claim 21, and the claimed limitations in claims 4-6 represent properties or characteristics of the battery or the anode. Since Akagi teaches substantially the same battery and the same anode as claimed, the claimed properties or characteristics in claims 4-6 are necessarily present. Where the claimed and prior art products (herein the batteries or the anodes) are identical or substantially identical in structure or composition, a prima facie case of either anticipation or obviousness has been established”. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01 I. In the instant case, Akagi teaches the same structure or composition of the battery or the anode as claimed.
Regarding claim 28, Akagi teaches the battery according to claim 21, and the claimed limitation “the battery is operable to be charged at a 10 C rate or higher while retaining at least 50% of 1 C rate charge retention to 80% of original capacity of the battery” represents a property, characteristic or function of the battery as claimed. Since Akagi teaches the same battery, the claimed property, characteristic or function is necessarily present. Where the claimed and prior art products (herein the batteries) are identical or substantially identical in structure or composition, a prima facie case of either anticipation or obviousness has been established”. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01 I. In the instant case, Akagi teaches the same structure or composition of the battery as claimed.
In addition, a manner of operating a device (in this case, the battery) does not differentiate an apparatus claim from the prior art. A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).
Regarding claim 29, Akagi teaches the battery according to claim 21, and the claimed limitation “the battery can be charged at temperatures below freezing temperature of water without lithium plating” represents a property, characteristic or function of the battery as claimed. Since Akagi teaches the same battery, the claimed property, characteristic or function is necessarily present. Where the claimed and prior art products (herein the batteries) are identical or substantially identical in structure or composition, a prima facie case of either anticipation or obviousness has been established”. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01 I. In the instant case, Akagi teaches the same structure or composition of the battery as claimed.
In addition, a manner of operating a device (in this case, the battery) does not differentiate an apparatus claim from the prior art. A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).
Regarding claim 30, Akagi teaches the battery according to claim 21, wherein the electrolyte comprises a liquid or a solid (“electrolyte solution”, “solid electrolyte”, [0015]).
Regarding claim 31, Akagi teaches a method of forming and operating a battery (at least [0001], [0015], [0026]), the method comprising:
forming battery (at least [0015]) comprising a cathode (“positive electrode”, [0015]), an electrolyte (“an electrolytic solution”, [0015]), and an anode (“negative electrode”, [0015]), the anode having an active material comprising 30%-90% of silicon by weight ([0014]). The above range of 30%-90% overlaps the corresponding range of “more than 50%” as claimed. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
The limitations “the battery is chargeable to full charge by lithiating less than 100% of the silicon of the anode” and “a voltage of the anode at full charge of the cell does not drop below a level where graphite is significantly lithiated” represent the characteristics, properties or functions of the battery. Since Akagi teaches the same battery as claimed, as addressed above, the claimed characteristics, properties or functions are necessarily present.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP § 2112.01 I. Regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997). See MPEP § 2112.01 I.
Regarding claim 32, Akagi teaches the method according to claim 31, wherein the percentage of silicon in the active material comprising is 30%-90% by weight, overlapping the instantly claimed 70%. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
Regarding claims 34-36, Akagi teaches the battery according to claim 31, and the claimed limitations in claims 14-16 represent properties or characteristics of the battery or the anode. Since Akagi teaches the same battery and the same anode as claimed, the claimed properties or characteristics in claims 14-16 are necessarily present. Where the claimed and prior art products (herein the batteries or the anodes) are identical or substantially identical in structure or composition, a prima facie case of either anticipation or obviousness has been established”. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01 I. In the instant case, Akagi teaches the same structure or composition of the battery or the anode as claimed.
Regarding claim 40, Akagi teaches the method according to claim 31. Further, since the composition of Akagi can be selected and adjusted in the range of 30% to 90% of silicon, one of ordinary skill in the art would readily be able to adjust and select, through routine experimentation, a composition of the active material that ensures the battery has a property or characteristic of “is chargeable to full charge by lithiating less than 100% of the silicon of the anode” as claimed. It is submitted "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. The optimization within prior art conditions or through routine experimentation is prima facie obvious. See MPEP § 2144.05 II-A. Note also that regarding composition claims, if the composition is the same, it must have the same properties (see MPEP § 2112.01).
Regarding claim 41, Akagi teaches an anode for use in a battery (at least [0015]), the anode comprising an active material comprising 30%-90% of silicon by weight ([0014]). The above range of 30%-90% overlaps the corresponding range of “more than 50%” as claimed. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
The limitations “the battery is chargeable to full charge by lithiating less than 100% of the silicon of the anode” and “a voltage of the anode at full charge of the cell does not drop below a level where graphite is significantly lithiated” represent the characteristics, properties or functions of the anode. Since Akagi teaches the same anode and the battery as claimed, as addressed above, the claimed characteristics, properties or functions are necessarily present.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP § 2112.01 I. Regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997). See MPEP § 2112.01 I.
Claim 27 is rejected under 35 U.S.C. 103 as being unpatentable over Akagi, as applied to claim 21 above, and further in view of Rohani et al. (WO 2019161288 A1, hereafter Rohani).
Regarding claim 27, Akagi teaches the battery according to claim 21, but is silent to the instantly claimed anode active material having no polymer binder. However, in the same field of endeavor, Rohani discloses that a silicon-carbon anode active material either having or having no polymer binder can be used in a battery ([0011], [0063]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to have used the anode active material having no polymer binder, as taught by Rohani, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. See MPEP 2144.07.
Claim 33 is rejected under 35 U.S.C. 103 as being unpatentable over Akagi, as applied to claim 31 above, and further in view of Yao et al. (Next Generation Anodes, FY 2018 3rd Quarter Progress Report, pages 21-23: “Operando quantification of lithiation-delithiation behavior of silicon-graphite composite electrodes for lithium-ion batteries”, hereafter Yao).
Regarding claim 33, Akagi teaches the method according to claim 31, but is silent to comprising configuring a voltage of the anode during discharge of the battery above a minimum voltage at which silicon can be lithiated. However, Yao discloses that the lithiation of silicon is active in the 0-1.0 voltage range and the lithiation of graphite is active in the range of < 0.25 V (1st paragraph in “Background”). It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to provide configuring a voltage of the anode during discharge of the battery to remain above a minimum voltage at which silicon can be lithiated, based on routine experimentation in view of the teachings of Yao, to avoid lithiation of graphite in the anode since the absence of lithiation of graphite is disclosed for the anode structure of Akagi ([0010], [0029]).
Claim 37 is rejected under 35 U.S.C. 103 as being unpatentable over Akagi, as applied to claim 31 above, and further in view of Rohani.
Regarding claim 37, Akagi teaches the method according to claim 31, but is silent to the instantly claimed anode active material having no polymer binder. However, in the same field of endeavor, Rohani discloses that a silicon-carbon anode active material either having or having no polymer binder can be used in a battery ([0011], [0063]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to have used the anode active material having no polymer binder, as taught by Rohani, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. See MPEP 2144.07.
Claim 38 is rejected under 35 U.S.C. 103 as being unpatentable over Akagi, as applied to claim 31 above, and further in view of Rohani.
Regarding claim 38, Akagi teaches the method according to claim 31, but is silent to comprising charging the battery at a 10 C rate or higher as claimed. However, Rohani discloses a method for forming a battery having an anode including silicon and carbon ([0011], [0012]) comprising charging the battery at a 10 C rate or higher ([0018], [0093]). It would have been obvious to one of ordinary skill in the art to have provided the anode of Kao to have the charging characteristics (e.g., charging at a 10 C or higher) of Rohani, to provide a battery having high charge capacity and further wherein the battery of Kao having the same construction as the claimed battery would be expected to exhibit the same properties.
Claim 39 is rejected under 35 U.S.C. 103 as being unpatentable over Akagi, as applied to claim 31 above, and further in view of Zhang et al. (US 20190229378 A1, hereafter Zhang).
Regarding claim 39, Akagi teaches the method according to claim 31, but does not specifically discloses charging the battery at temperatures below freezing temperature of water without lithium plating. However, Zhang discloses a battery (42, Fig. 4) having an anode including silicon and carbon ([0056]), wherein the battery can be charged at temperatures below freezing temperature of water without lithium plating (Fig. 21, disclosing no plating occurring at T=0 degrees). It would have been obvious to one of ordinary skill in the art to have provided the conditions that provide no lithium plating at temperatures below freezing temperature of water, as taught by Zhang, in the battery of Akagi, to enable a battery capable of effective charging at freezing temperature of water.
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Any inquiry concerning this communication or earlier communications from the examiner should be directed to ZHONGQING WEI whose telephone number is (571)272-4809. The examiner can normally be reached Mon - Fri 9:30 - 6:00.
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/ZHONGQING WEI/Primary Examiner, Art Unit 1727
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